ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Domain Management, Syed Hussain

Case No. D2012-2476

1. The Parties

Respondent is Domain Management, Syed Hussain of Closter, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legobatmanthemovie.com> (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 19, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant Domain Management, Syed Hussain of Closter, New Jersey, United States of America and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2012 providing the registrant Domain Management, Syed Hussain of Closter, New Jersey, United States of America and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 20, 2012.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2013.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on January 21, 2013. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

As is apparent from the above, there is an issue as to the identity of the proper Respondent in this administrative proceeding. The Panel deals with this issue in detail in Section 6 below.

4. Factual Background

Complainant has registered the trademark LEGO (the “LEGO Trademark”) around the world in connection with a range of toy and related goods. Complainant has subsidiaries and branches around the world, and LEGO products are sold in more than 130 countries including the United States, where Respondent is located. The US trademark registration number attached to the Complaint is 3440699, registered in 2008.

Complainant owns the domain name <lego.com> (registered on August 22, 1995). Furthermore, Complainant is the owner of more than 2,400 domain names containing the term “lego”. Its vast portfolio of domain names is listed in Annex 8 of the Complaint. It is the strict policy of Complainant that all domain names containing the word “lego” should be owned by Complainant.

The Domain Name <legobatmanthemovie.com> was registered by Respondent on October 25, 2012.

5. Parties’ Contentions

A. Complainant

Complainant contends in accordance with paragraph 4(a) of the Policy that the Domain Name is confusingly similar to the LEGO Trademark in which it has rights; that Respondent has no rights or legitimate interests in the Domain Name; and that Respondent registered and uses the Domain Name in bad faith.

Complainant states that the trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. For instance, in a list of the official Top 500 Consumer Super brands for 2009/10, provided by Superbrands UK, LEGO appears as number 8 of the most famous trademarks and brands in the world. The LEGO group has expanded use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO group also maintains an extensive website under the domain name <lego.com>.

Complainant explains that the mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”), confirmed and extended by Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the status of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the mark or a confusingly similar denomination in connection with any products or services, regardless of the list of the products and services for which the trademark is registered. Thus, the legal protection for the LEGO mark goes far beyond toys and goods similar to toys.

(i) Identical or confusingly similar to a trademark in which Complainant has rights: Complainant contends that the dominant part of the Domain Name <legobatmanthemovie.com> comprises the word “lego”, which is identical to the registered trademark LEGO, which has been registered by Complainant in many trademarks and domain names in numerous countries around the world (Annexes 6 and 8 to the Complaint). The fame of the trademark has been confirmed in numerous previous UDRP decisions (LEGO Juris A/S v. RampePurda, WIPO Case No. D2010-0840; LEGO Juris A/S v. Domain Administrator;
WIPO Case No. D2010-1260; LEGO Juris A/S v. Reginald Hastings Jr.,
WIPO Case No. D2009-0680).

Complainant urges that the Domain Name is confusingly similar to Complainant’s world famous LEGO trademark. The addition of the generic top-level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant to determine the confusing similarity between the LEGO trademark and the Domain Name.

Complainant states that the suffix “batman” does not detract from the overall impression and the Domain Name must therefore be considered to be confusingly similar with Complainant’s trademark. Complainant has a license agreement with Warner Brothers Consumer Products, Inc. regarding the development, manufacture and sale of products incorporating the entire DC Comics / DC Universe cast of characters, including but not limited to BATMAN, resulting in the LEGO BATMAN line of products (Annex 14 to the Complaint). Hence the term is rather fitted to enhance the confusing similarity element.

Anyone who sees the Domain Name is bound to mistake it for a name related to Complainant. The likelihood of confusion includes an obvious association with the trademark of Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive Respondent’s Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with Complainant. The trademark also risks being tarnished by being connected to a website. By using the trademark as a dominant part of the Domain Name, Respondent exploits the goodwill and the image of the LEGO trademark, which may result in dilution and other damage for Complainant’s trademark.

Summarizing this, Complainant states that:

a) Complainant is the owner of the well-known trademark LEGO;

b) The Domain Name is clearly confusingly similar to the Complainants registered trademark LEGO; and

c) The suffix does not detract from the overall impression and the Domain Name must therefore be considered to be confusingly similar with Complainant’s trademark.

(ii) No rights or legitimate interests in respect of the Domain Name: Complainant states it has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name. Complainant has also not found anything that would suggest that Respondent has been using the term “lego” in any way that would give Respondent rights or legitimate interests in the Domain Name. Consequently, Respondent may not claim any rights established by common usage.

It is also clear that no license or authorization of any kind has been given by Complainant to Respondent. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant.

Respondent registered the Domain Name on October 25, 2012. Complainant contends that the mere registration of a domain name does not give the owner rights or legitimate interests in respect of the Domain Name.

Complainant states that it is highly unlikely that Respondent would not have known of Complainant’s legal rights in the mark LEGO at the time of the registration. It is rather obvious that the fame of the trademark that has motivated Respondent to register the Domain Name. That is, Respondent cannot claim to have been using LEGO, without being aware of Complainant’s rights to it. This proves that Respondent’s interests cannot have been legitimate. In Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,
WIPO Case No. D2001-1314, it was established, that any use of such trademark in a domain name would violate the rights of the trademark owner.

Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to websites displaying sponsored links to e.g. <klossbutiken.se>. By doing this, Respondent is using the LEGO trademark and misleading Internet users to commercial web sites and consequently, Respondent is tarnishing the trademark LEGO.

No evidence has been found that Respondent uses the name as a company name or has any other legal right in the name LEGO. The Respondent is trying to sponge off the Complainant’s world famous trademark. In Drexel University v. David Brouda,
WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.”. Referring to the above mentioned, the Respondent has no rights or legitimate interest in respect of the Domain Name.

Complainant tried to contact Respondent on November 29, 2012, through a cease and desist letter (Annex 12). Respondent replied and offered the Domain Name for sale for USD 750 via <sedo.com> which is an auction site. Complainant replied back and explained that it does not acquire Domain Names it is legally entitled to and asked for a transfer. Respondent never replied back. Since the efforts of trying to solve the matter amicably were unsuccessful, Complainant chose to file a complaint under the UDRP. It has been mentioned in earlier UDRP decisions that the failure of a respondent to respond to a cease and desist letter, or a similar attempt of contact, has been considered relevant in a finding of bad faith, see News Group Newspapers Limited and News Network Limited v. Momma med Ia,
WIPO Case No. D2000-1623; Nike Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online Inc. v. Antonio R. Diaz,
WIPO Case No. D2000-1460.

The Domain Name is connected to a parked pay-per-click website displaying links to other property websites, from which Respondent most likely derives income once a visitor clicks on the links. The use of sponsored links is a factor indicating bad faith. The discussion of The Jennifer Lopez Foundation v. Jeremiah Tieman,
WIPO Case No. D2009-0057, applies for this case as well. Consequently, Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. UDRP panels have tended to consider these pay-per-click practices generally as unfair use resulting in misleading diversion.

To summarize, LEGO is a famous trademark worldwide. There is no doubt that Respondent was aware of the rights Complainant has in the trademark and the value of said trademark at the time of the registration. There is no connection between Respondent and Complainant. By using the Domain Name, Respondent is not making a legitimate noncommercial or fair use but is misleadingly diverting consumers for its own commercial gain. Consequently, Respondent should be considered to have registered and to be using the Domain Name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions and is in default.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Before addressing the above there is one preliminary point to be addressed: the identity of the proper Respondent.

B. The Identity of the Proper Respondent

The Complaint was filed by Complainant with the Center against Protected Domain Services of Denver, Colorado, the WhoIs-listed registrant of the Domain Name at that time. Following service of the Complaint upon Protected Domain Services of Denver, Colorado and the Registrar by Complainant, but prior to formal notification of the Complaint and commencement of the administrative proceedings by the Center, the Registrar identified Syed Hussain of Closter, New Jersey as the registrant in place of Protected Domain Services.

This scenario is now commonplace. Someone wishing to acquire a domain name, but wishing to conceal his or her identity, may use a privacy service such as provided by Protected Domain Services. The domain name is registered in the name of the privacy service. The agreements of practices between privacy services and their customers vary when it comes to UDRP complaints. Some privacy services unmask (or disclose) the customer (“underlying registrant”) on receipt of a warning letter from a complainant, thereby enabling the complainant to address a complaint to the underlying registrant. Some privacy services only unmask the underlying registrant following receipt of a complaint, or receipt of the Center's request for registrar verification, thereby leading to a situation such as in the present case where the Center provides the registrar-confirmed registrant information to the complainant and invites an amendment to the complaint. Others, it appears, decline to unmask the underlying registrant at all.

Various questions arise in relation to the use of privacy services in the context of a proceeding under the Policy where the unmasking of an underlying registrant takes place after the filing of a complaint with a provider but prior to formal commencement of the administrative proceeding.

(3) Treat both the privacy service and the underlying registrant as respondents.

This Panel finds appropriate the first of these above-listed options.

The Panel is satisfied that (i) Complainant commenced the proceeding against the WhoIs-listed registrant of record who is a privacy service company, (ii) upon disclosure of the underlying registrant amended the complaint by invoking the underlying registrant as Respondent, (iii) and amending a complaint upon disclosure of the underlying registrant by the privacy service company does not amount to a complaint deficiency.

The Panel therefore finds that (a) the Complaint is compliant with the Policy and Rules, (b) it was appropriate for the Center to provide the Complainant with the registrar-confirmed registrant information and to invite Complainant (in its discretion) to amend the Complaint, (c) it was appropriate for the Center to provide notice of the commencement of the administrative proceedings to both the Complaint-listed and Registrar-confirmed registrants and (d) it was appropriate for the Center to treat Syed Hussain (the registrar-confirmed / underlying registrant) as Respondent in this administrative proceeding until such time as and subject to the Panel’s final determination on this issue.

Accordingly, the Panel proceeds to a proper consideration of the three elements of paragraph 4(a) of the Policy.

C. Trademark Rights

Complainant provided sufficient evidence of its rights to the LEGO trademark (see Annexes 6, 7, 8 to the Complaint). The BATMAN mark is held by DC Comics Inc., a subsidiary of Warner Brother Consumer Inc., which is not a party to these proceedings. Complainant also provided evidence of a license agreement regarding the BATMAN mark with Warner Brother Consumer Inc., which is the parent company of BATMAN trademark owner DC Comics, Inc. (Annex 14 to the Complaint).

D. Identical or Confusingly Similar

Complainant has shown that it is the owner of the trademark LEGO in various countries worldwide. Also, Complainant evidenced it maintains a license agreement with Warner Brother Consumer Products, Inc., regarding the development, manufacture and sale of products incorporating the entire DC Comics / DC Universe cast of characters, including but not limited to BATMAN and resulting in the LEGO BATMAN line of products.

The Domain Name consists of the union of Complainant’s trademark LEGO combined with the suffix “batmanthemovie” (the element “batmanthemovie” being similar to the BATMAN mark, not held by Complainant) and the generic top-level domain “.com”. Complainant contends the dominant part of the Domain Name comprises the word “lego”. Complainant does not support by any kind of evidence the argument that the element “lego” would be dominant over the element “batmanthemovie”. However, the Panel finds that no such evidence is required in this case.

Panelists in earlier UDRP cases have found, that where the trademarks of two separate companies are combined in a domain name, there is a likelihood of confusion between either mark and the domain name, if that combination of the trademarks makes it likely for the online user to get confused as to the affiliation or sponsorship of the domain name (see e.g. ABB Asea Brown Boveri Ltd v. Mark Maddison,
WIPO Case No. D2001-0538). While a likelihood of confusion can already be present where two trademarks owned by two unrelated companies are combined in a domain name (as held in Minnesota Mining and Manufacturing Company v. Belowcost,
WIPO Case No. D2001-0420), confusion is even more likely where the trademarks combined in a domain name belong to companies which, such as in this case, are linked by commercial agreements. Given the license agreement between Complainant and the owner of the BATMAN trademark, it is very likely that the public may think that the Domain Name is somehow connected to either Complainant or the owner of the BATMAN mark, or (most likely) to both. This justifies the conclusion that the Domain Name is confusingly similar to the LEGO mark, in which Complainant holds rights.

For the sake of completeness, the Panel remarks that the conclusion that the Domain Name is confusingly similar to the LEGO mark, leaves open the question whether or not the holder of the BATMAN mark, which mark is also contained in the Domain Name, has any better rights to the Domain Name (outside the context of this UDRP proceeding), as the Domain Name may also be confusingly similar to the BATMAN mark. That question does not need to be answered and is not prejudiced by the decision in these proceedings, to which the holder of the BATMAN mark is not a party.

Consequently, the Panel finds that Complainant has shown that the Domain Name is confusingly similar to trademarks in which Complainant has rights and accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy.

E. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)).

In the present case, Complainant alleged that Respondent has no rights or legitimate interests in respect of the Domain Name and Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that by providing the relevant evidence, Complainant convincingly established such a prima facie due to the fact that Complainant has not licensed or otherwise permitted Respondent to use its LEGO trademark or a variation of it. Respondent did not provide any evidence to show any rights or legitimate interests in the Domain Name. Furthermore, Respondent is neither commonly known by the Domain Name nor adduces itself arguments why it shall have the right or a legitimate interest in the Domain Name. Moreover, the evidence shows that the Domain Name is linked to websites displaying sponsored links to other property websites. Panels in earlier UDRP cases have found that the use of domain names to provide sponsored links is not a bona fide use. (“Further, Respondent’s use of the disputed Domain Names to sponsor links to paid advertising is not use of the disputed Domain Names in connection with a bona fide offering of goods or services”, Lego Iuris A/S v. J. h. Ryu,
WIPO Case No. D2010-1156).

The fact that the Respondent has chosen a trademark from a third party, with which Complainant maintains a well visible (by way of the LEGO BATMAN line of products) cooperation and license agreement, further supports the impression that Respondent is well aware of the nature of these trademarks. In addition, to Complainant's knowledge, Respondent has no trademarks corresponding to either LEGO or BATMAN. Respondent was not authorized to use Complainant's mark. These circumstances strongly suggest that Respondent has no rights or legitimate interests in the <legobatmanthemovie.com> domain name and it was registered and used in bad faith.

At the time of the filing of the Complaint, the Domain Name was connected to a website containing sponsored links. The Panel finds that, as discussed further below, Respondent was thus using the Domain Name to intentionally attempt to attract for commercial gain, Internet users to the websites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. This cannot be a bona fide use of the Domain Name.

Therefore, and in the absence of any plausible explanation, the addition of the mark LEGO to the suffix “batmanthemovie” appears to play deliberately on Complainant’s trademark.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

F. Registered and Used in Bad Faith

Regarding the registration and the use of the Domain Name in bad faith according to Paragraph 4(a)(iii) of the Policy, the Panel considers the following:

As convincingly established by Complainant, the predecessor of LEGO has registered the LEGO trademark in the United States in 1953. In 2012, when Respondent registered the disputed Domain Name, the LEGO trademark has been registered in more than 100 countries and the LEGO products are sold in more than 130 countries, including in the United States. Therefore, it is highly unlikely that Respondent did not know of the Complainant's trademark LEGO at the time of the registration of the Domain Name.

After the registration, Complainant informed Respondent by email and letter that the registration and use of the Domain Name violated Complainant’s trademark rights. Respondent replied and offered the Domain Name for sale for USD 750. Complainant answered that it doesn’t acquire domain names it is legally entitled to and asked for a transfer. Respondent then never replied back. Consequently, the Panel finds that the demand of an amount substantially exceeding any out-of-pocket costs is further evidence of bad faith registration and use.

As will be apparent from above, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited,
WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

As stated under Section 6. E. above, the use of sponsored links displayed on the website connected to the Domain Name from which Respondent most likely derives income once a visitor clicks on the links is a factor indicating both bad faith registration and bad faith use (see also e.g. Philip Morris Inc. v. Alex Tsypkin,
WIPO Case No. D2002-0946; The Jennifer Lopez Foundation v. Jeremiah Tieman/Jennifer Lopez Net/Jennifer Lopez/Vaca Systems LLC,
WIPO Case No. 2009-0057).

UDRP panels have generally recognized that use of a domain name to post parking and landing pages or pay per click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that pay per click page operators can achieve by suppressing pay per click advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion (see e.g. Paris Hilton v. Deepak Kumar,
WIPO Case No. D2010-1364, Lardi Ltd v. Belize Domain WHOIS Service Ltd,
WIPO Case No. D2010-1437).

In the present case, the Panel is convinced that the links (e.g. to <klossbutiken.se>) are merely based on trademark value; thus Respondent is exploiting Complainant’s trademark rights, having registered and used the Domain Name in bad faith.

In view of the above and in light of Complainant’s highly distinctive trademark, Respondent’s use of a confusingly similar Domain Name and Respondent’s lack of further response, the Panel is satisfied that the third element is present and Complainant has met the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <legobatmanthemovie.com>, be transferred to Complainant.